Jellys Music Hall Inc. v The Triple-M Broadcasting Company Pty Ltd Melbourne FM Radio Pty Ltd FM 104 Pty Ltd New Broadcasting Ltd trading as 96FM Stereo

[1993] FCA 140

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JUDGMENT No. .. d.&. .0...,.l!.9.f112 I , i

IN THE	FEDERAL-COURT OF A U S m I A )
NKW SOUTH WALES DISTRICT REGISTRY)	No NG 67 of 1993
GENERAL DIVISION	1

BE!WBEN JELLY ' S MUSIC HALL

INCORPORATED

Applicant

AND THE TRIPLE-M BROADCASTING

COMPANY PTY LIMITED

First Respondent

MELBOURNE FM RADIO PTY

LIMITED

Second Respondent

FM 104 PTY LIMITED

Third Respondent

NKW BROADCASTING LIMITED
tradins as 96FM STEREO

Fourth Respondent

EX TEMPORE JUDGMENT

EINPELD J SYDNEY 18 FEBRUARY 1993

Two days ago, on 16 February, the applicant, which is a United States company apparently operating out of the State of Hawaii, sought leave to serve short notice of an application for permanent and interlocutory relief against four Australian companies which are inter-related in corporate terms and respectively operate FM radio stations in Sydney, Melbourne, Brisbane and Perth. The Sydney company is the first

respondent and is known as Triple-M Broadcasting Company Pty	Limited operating a well-known radio station known by that
name. I shall henceforth refer to the respondents by the name
Triple-M.
The application which the applicant sought to, and did in fact, serve on short notice and was made returnable for today was an application under the Trade Practices Act, the Copyright Act and the general law for various forms of relief, principally injunctions and damages. The general law knows this area as passing off. In this case, the dispute arises out of a name and concept known as Radio Free. The evidence is, and I summarise it only for present purposes, that Radio Free ascertains by widely distributed ballot papers the opinions of the public at large about what music they would like to have played on a particular radio station and feeding it into a fairly complex computer program with the aim of determining public preferences in music divisible into a number of different categories. Among the categories are the interests or preferences of men and women, of young people and older people, and of daytime and night listeners, and so on.
or service 24 hours a day, seven days a week on one or more It appears that the applicant operates the Radio Free facility
radio stations in Hawaii. It is also engaged in businesses of an allied kind concerning the marketing of CDs and cassettes, records and other methods of conveying music. In December 1992, Belinda Ann Bradford, a resident of Honolulu, and president of a Hawaiian company named Belle Fashion and Marketing Consultants Incorporated, came to Australia as the
agent of the applicant with a view to examining the possibility that one or more Australian radio stations licence the Radio Free idea or concept in this country. Amongst other things MS Bradford did was to have conversations, both personal and by telephone, with senior executives or officer- of Triple-M.
Dusing the course of these meetings she made available information and documentation which set out in some detail the nature of the system as operated in Hawaii. I am informed from the bar table, and it does not seem to be disputed, that a licence fee of something of the order of $2 million was asked for the exclusive right to licence the system in Australia. After several meetings and conversations, Triple-M informed MS Bradford it was not interested in the project and did not intend to proceed with it. She was given back some or all of the printed material which she had originally produced.
The case has come on with a degree of urgency because it
and implement a project to introduce into the program of their taken and retained, and that Triple-M has gone on to develop appears that a photocopy of at least one crucial document was
radio stations a similar form of music plebiscite under the name Radio Free which it proposes to launch publicly next week. As far as the evidence goes at the moment, this project appears to bear some resemblance to the programs run by the applicant in Hawaii, although it is far from certain at present that the idea of the applicant, to the extent that it
can properly be so described in the way the law understands the term, is in fact going to be copied in Australia. One difference is that Triple-M only intends a relatively small exposure of the scheme in terms of hours per day, at least in the rnitial 3-~ges. But certainly a project is now being devised by Triple-M which does involve obtaining the views of the listening public by similar methods to those used by the applicant, presumably with a view to fashioning its broadcasting services by adopting such expressions of public opinion.
The applicant does not allege that the computer software used in Hawaii, the details of which were contained in the document given to executives of Triple-M of which a photocopy was retained, is in fact to be used by Triple-M. But it seems clear that the general outline of the applicant's product is intended to be used in the initial stages of the operation of Radio Free on the Triple-M stations, at least in a basic form. The urgency of the case in particular terms is emphasised by
their radio stations the imminent commencement of programs the undisputed fact that Triple-M has been advertising on
under the name Radio Free or at least the launching of the balloting process. In specific terms it is also admitted that from November 1992 it had been decided by the controlling company of Triple-M stations to suspend what were previously operated as their public request programs "pending a relaunch of an all request program in early 1993". In view of the fact that this was done before the first meeting took place with MS Bradford, that decision cannot have been influenced by anything passing between MS Bradford and Triple-M's general manager, Mr Grace.
There is not a little dispute about some of the content of the discussions between Mr Grace and MS Bradford. One significant area of dispute is the discussion about the asking price for a licence to run this project. MS Bradford evidenced her offer to treat of $2 million which she says was not rejected but Mr Grace said that he ridiculed this suggestion to the point to where he is said to have offered her $20,000 for the name "but that is all".
The advertising that has taken place on Triple-M stations with the use and under the name of Radio Free apparently commenced at the beginning of this month when Mr Grace decided, as he said:

To relaunch the 7 pm t o 10 pm music request programs broadcast Mondays t o Fridays by each o f the four

respondents using the words r e s p e c t i v e l y , Radio F r e e	Sydney, Radio Free Melbourne, Radio Free Brisbane,
Radio Free Perth.

Mr Grace said that as part of that relaunch a new announcer has been employed. There have been a number of promotional announcements broadcast in the respective capital cities since 6 February. Once in each hour on each station from 12 February, more detailed announcements publicising the programs have been broadcast. Once every two hours from about 14

February a recorded telephone input line referred to as "Radio Free speech, the voice of a new generation" has been publicised in announcements sponsored by Pepsi Cola. The applicant seeks an interim injunction to stop the commercials,

the issue of the ballot paper-, snd ti.~ launch.

The questions for decision at the moment are whether there is a reasonably or seriously arguable case for the relief sought, and whether the balance of convenience favours the grant of an injunction. The first issue is whether the applicant has a reputation in Australia at all. Here the applicant's case is not strong. The evidence at the moment establishes that a number of Australians travel to Hawaii for vacation or other purposes each year. I am asked to draw the inference that these largely holiday makers would, in fact, listen to Hawaiian radio during the course of their holidays, either in hotel rooms, through transistor radios on beaches or in car radios while travelling around Hawaii; that they would be listening to the station which operates under the Radio Free

persons will be confused or misled into believing that Triple-	label; that if Triple-M is allowed to use this label, these
M is operating the system they have heard in Hawaii; and that,
as this would not be the fact, they would thereby view the applicant's product and name unfavourably or be confused into believing that they were actually being exposed to the applicant's product in Australia.
The second aspect of reputation relied on by the applicant as existing in Australia is a reputation amongst people involved in the running of radio stations or music programs or the dissemination of music in Australia, as well as actual or potential com.r;-ciai sponsors of such activity. In this regard the case is stronger, not only because of the facts as proved in the evidence, but also because of the inferences. It would be expected that trades people would be aware of changes in product and activity such as the applicant's, especially in the United States on whose radio stations many of ours are modelled. Sponsors would be aware of the applicant's reputation because a sizeable number of large Australian corporations are offshoots of multi-national companies, many of which are American.
Hence the argument is that these people would be in the same type of confusion as projected before except that they would be more responsive to the confusion because they would be more knowledgeable about it. The applicant claims that if this
of losing what it claims to be the good reputation of Radio deceptive appearance is allowed to go unchecked, it is at risk
Free and everything attaching to it. It would be deprived of any opportunity of selling this name and product in the Australian market because no one would again be willing to buy the concept under a name which is operating on a competitor station or set of stations. Perhaps even more importantly, it is at risk that Triple-M's proposed project will distort or abuse the applicant's product or so modify or change it to suit its own interests and desires in a way which would damage the reputation the applicant has established.
By reference to some case law and other well known principles, Triple-M argues that no reputation of any . ignificance has been established and that the requirement of the law which generally applies, viz. that a substantial number of people should actually be or be in danger of being misled has not been established by the evidence brought. It certainly must be said that there is absolutely no evidence at all that whatever reputation the applicant has in Australia is a good reputation as opposed to any other sort of reputation. Obviously, the loss of a bad reputation will hardly be likely to figure in damages at any time. However, on an interlocutory application such as this for a temporary injunction to hold the status quo before the action can be brought on, the level at which these matters have to be proved is, of course, significantly less than would be the case at the final hearing. Any finding that an injunction should be
applicant will win, or even might win, the final case. granted is and cannot be taken as any finding that the
On the balance of convenience, the argument really boils down to the simple dichotomy to which I have referred in brief already. The applicant says that if the Triple-M's project goes ahead, its reputation will be or is in danger of being lost forever, that it will not be able to market its project in Australia, that because of the events to take place in Australia and because of Triple-M's execution of the Radio Free project, it is in danger of losing its reputation in other countries, and that none of this could ever be calculable, certainly not easily, in financial damages. On the other hand, Triple-M says !hat it has gone ahead with the project in its own way, that it has already spent quite a lot of money on the project, including hiring a special announcer, that it has promised its audience that the project would go ahead, and that it will lose face with its clientele if it cannot carry out that undertaking. As I mentioned in the course of argument, no doubt if this occurs, it will be me who is blamed for such a gross breach of faith. Nonetheless, I must try to look at the case dispassionately and hope that the listeners of Triple-M will not view me unfavourably as a consequence, if that is the way the case concludes.
The situation is not an easy one. There is an extra problem that I raised during the course of the hearing. At the present time Triple-M proposes to continue using the name
being sent out to various music stores and other outlets Radio Free. and from next Monday it will be using it in on ballot papers It is, as I have said, using it in advertising,
around the country. I have been shown drafts of possible forms of ballot paper. They will certainly not be the same as the ballot papers used by the applicant in Hawaii, but they unquestionably make strong use of the name Radio Free. People who see such a ballot paper, still more people who complete it and had therefore considered its terms, would be under no

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misapprehension that they were participating in an operation
known by that name.

On the other hand, the idea itself, that is the obtaining of the information, its computerisation and the consequent use c-: the information thereby obtained in the selection of music to be played on the radio stations, is not due to commence until 1 March. The pressure of work in the Court at this time means that it is really not possible for me to consider the whole of the matter this afternoon, the case having been allowed to come on at very short notice. There are other matters in the Court that have to be determined before 1 March and they must take priority. I therefore invited the parties to separate out for present purposes the issue concerning the use of the name from the issue concerning the use of the idea. This judgment deals only with the current and immediately proposed use of the name Radio Free. I will give the parties an opportunity to address further the issue of the idea in the next week.

before the Court is whether to issue an injunction to stop the

So far therefore as concerns the use of the name, the question

ongoing advertising by Triple-M of and under the name of Radio Free and the distribution of the ballot papers containing those words or any words deceptively similar thereto.

I have always found it difficult to understand the argument of

those who resist orders of this kind on the ground that whilst

it may be established that they have acted unlawfully, they should be relieved from the consequences of the unlawful behaviour because they have spent a lot of money or time underwriting the unlawfulness. I know that it is a category of e\~dence frequently placed before the cc2~i-ts in matters such as this, but I think in this particular case it should not be allowed to defeat the claim for an injunction.

There can be little doubt on the evidence that Triple-M and its executives have proceeded with the use of this name and its promotion not only knowing of the conversations which they had with MS Bradford in December and January, but also knowing that until that time they did not have any plans to use Radio Free, at least so far as the evidence is concerned, in the relaunch of request programs in 1993. No doubt Triple-M has taken the decision to use that name as a careful deliberate corporate act. It is difficult to believe that the adoption of the term Radio Free, so shortly after the conversations with MS Bradford, was coincidental.

expert evidence that my knowledge of the Australian public, So far as the audience is concerned, I can only say without

which is not especially specialised but now goes back over a long period, some would say too long, enables me to say that the public do understand that from time to time courts need to intervene to hold the balance of justice and fairness in the community as evenly as possible. I am sure that they understand that injunctions issued on an interim or temporary basis do not result in final findings or deteminations of legal issues. I believe they understand that a delay of the product offered to them by Triple-M, which is all a temporary injunction will do, does not mean that they will be deprived of it for a particularly lengthy period of time if Friple-M is able to establish the case it is propounding. I regret that it is necessary, in the circumstances, to disappoint their expectations for a short time but I am confident that, when properly informed, the will not experience difficulty in understanding that to the best extent that the court can affect it, the delay will be as short as possible.

The applicant gives the usual undertaking as to damages in support of its application for an injunction and adds to that normal undertaking the offer to execute security up to $50,000 in favour of the Triple-M companies within seven days. Triple-M for its part, quite rightly and commendably, accepts that broadened undertaken as a proper basis on which any injunction should be issued. I therefore propose to pronounce

an injunction in terms similar to those set out in the	application upon the expanded undertaking to which I have
re£	erred.

The injunction as presently phrased in the application is in fact not grammatically correct and needs some editing. I suspect that it would be better, rather than for me to try to do it on the run, if the parties confer about a suitable fom. If there cannot be agreement, I shall myself draft the

injunction. I& intent will be to prevent Triple-M, pending the completion of the action, from using the term Radio Free or any similar words in the promotion or advertising of its programs, or from disclosing the information which the applicant claims to have been confidential informatior: supplied by MS Bradford to executives of Triple-M during their discussions in December and January.

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I ccrtlfy !h:l thlc snd the hYelvC I

~ r c c c d ~ ~ q p-rjac are a true copy of the 1 1

i Reascns for Judgment herein of h ~ s Honour :

Justlce E~nfeld !

1   Associa

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